How does the USPTO evaluate the credibility of an asserted utility?
The USPTO evaluates the credibility of an asserted utility based on the presumption that an applicant’s assertion of utility is true, unless there is reason to doubt it. The MPEP states: As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is a reason for one skilled in the art to question the objective truth of the statement of utility or its scope.
To challenge the credibility of an asserted utility, the USPTO must establish that it is more likely than not that a person of ordinary skill in the art would doubt the truth of the statement of utility. This is done by evaluating the logic of the statements made and considering any evidence cited by the applicant.
The evaluation is based on a preponderance of evidence standard, meaning that the totality of facts and reasoning should suggest that it is more likely than not that the assertion is false for a rejection to be maintained.
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